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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Savino Del Bene Inc. v. Graziano Innocenti Gennari

Case No. D2000-1133

 

1. The Parties

The Complainant is Savino Del Bene, Inc., a company incorporated in the State of Illinois, U.S.A. on December 12, 1989, with postal address of 1550 East Higgins Road, Suite 115, Elk Grove Village, Il 60007 U.S.A.

The Respondent is Mr. Graziano Innocenti Gennari, with postal address at via Ragazzi del '99 no. 45, Firenze, 50141 Italy.

 

2. The Domain Name and the Registrar

The domain name at issue is "savinodelbene.com" (hereinafter the "Domain Name"). The registrar is Network Solutions (hereinafter the "Registrar").

 

3. Procedural History

On August 28, 2000, the Complainant filed by e-mail a complaint (hereinafter the "Complaint") with the WIPO Arbitration and Mediation Center (hereinafter the "Center"). The Center received a hardcopy of the Complaint on August 30, 2000.

On September 10, 2000, the Registrar confirmed that the Domain Name "savinodelbene.com" had been registered via the Registrar’s registration services, that the current registrant of the Domain Name is Mr. Graziano Innocenti F.G. and that the Domain Name is in "Active" status. The Registrar also confirmed that Network Solutions' 4.0 Service Agreement is in effect.

The Center then proceeded to verify whether the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "WIPO Rules"), including the payment of the requisite fees.

On September 12, 2000, the Center notified the Complainant that the Complaint does not indicate that the Complainant has a trademark, either registered or under common law, as required by paragraph 3(b)(ix) of the ICANN Rules and, considering that Network Solutions' 4.0 Service Agreement is in force, requested him to amend the Mutual Jurisdiction to reflect the place of the Respondent. The Center set Complainant a five-day deadline to cure these deficiencies.

On September 15, 2000, Complainant timely filed an amended complaint (the "Amended Complaint") which was received in hard copy by the Center on September 25, 2000. On September 26, 2000, the Center confirmed that the Amended Complaint satisfies the formal requirements of the Policy, ICANN Rules and WIPO Rules. The administrative panel (hereinafter the "Panel") has reviewed the documentary evidence provided by the Complainant and the Center and agrees with the Center's assessment.

In a letter dated September 26, 2000, the Center informed the Respondent of the commencement of the proceedings as of September 26, 2000, notified the Complaint to Respondent in accordance with paragraph 2(a) of the ICANN Rules and informed him of the rule providing for a response to the Complaint within 20 days, i.e. October 15, 2000, (hereinafter the "Response").

The Respondent timely filed the Response on October 13, 2000.

On November 8, 2000, the Center informed the Parties that an administrative panel (the "Panel") has been appointed and transferred the file to the Panel.

The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Rules and the panelist issued a Statement of Acceptance and Declaration of Impartiality and Independence.

 

4. Factual Background

Savino Del Bene is an Italian international freight forwarder established approximately 90 years ago which provides international shipments notably between Italy and the U.S.A. Complainant filed copies of certificates dated 1939 and 1963 attesting membership of Savino Del Bene in the American Chamber of Commerce for Italy, its IATA appointment dated 1948, and its authorization to perform freight forwarding services issued by the Italian authorities in 1966 (Exhibit 3 to the Complaint).

Complainant owns an Italian trademark registration for the SDB logo with filing date of December 16, 1988 claimed for transportation and warehousing services in Int. Class 39 (It. Reg. 11135; Exhibit 3 to the Complaint). Complainant has not shown ownership of a trademark registration for the name SAVINO DEL BENE.

Respondent registered the Domain Name on October 9, 1999. No web site is posted at this Domain Name as of the date of this decision.

 

5. Parties' Contentions

Complainant contends:

- that it owns common law trademark rights in the name SAVINO DEL BENE;

- that the registration of the domain name "savinodelbene.com" was made without consent of the Complainant;

- that the Respondent was not formerly employed, contracted or assigned by the Complainant and has no claim to the Domain Name;

- that the Respondent has not contacted the Complainant with any offer to sell or otherwise transfer the Domain Name;

- that Respondent is neither making a bona fide offering of goods and services nor making a legitimate non-commercial or fair use of the Domain Name.

Respondent contends:

- that the Complainant does not own any registrations of the SAVINO DEL BENE trademark in the United States or Italy but only owns trademark registrations of the SDB logo;

- that the Complainant does not own trademark rights under U.S. common law either, because "Savino" is a first name and "Del Bene" is a surname and such names are not protected under U.S. common law;

- that the mere registration of a domain name does not constitute a trademark infringement;

- that the Respondent worked for Savino Del Bene Co. in Italy from 1978 until 1980, and was contracted and worked for them as a Manager in Miami and New York from 1980 until 1984;

- that, as a former employee, Respondent registered the Domain Name to form a forum web site where all the former employees that the Respondent met when working for Complainant could keep in touch and where shareholders of Complainant could exchange their views;

- that the existence of the Domain Name does not prevent Complainant from being present on the Internet since Complainant owns other domain names ("sdb.it"; "sdbusa.com", "savinodelbene.net" and "savinodelbene.org");

- that Respondent did not register the Domain Name for the purpose of selling anything, nor for transferring it to anybody else;

- that Respondent's intended use is non-commercial or fair use.

 

6. Discussion and Findings

To have the disputed Domain Names transferred to it, Complainant must prove each of the following (Policy, paragraph 4(a)):

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the Respondent's domain name has been registered and is being used in bad faith.

Identity or Confusing Similarity

The trademark registrations of the SDB logo are clearly not confusingly similar to the Domain Name. It is further undisputed that Complainant does not own any registration of the trademark SAVINO DEL BENE. However, Complainant claims to have U.S. common law trademark rights in this name. The Policy does not require that a trademark be registered by a governmental authority for such right to exist; rather, the Policy is also applicable to common law trademark rights acquired under U.S. law through use of the mark on or in connection with particular goods or services (Adobe Systems Inc. v. Domain OZ, WIPO D2000-0057; CSA Int'l v. Shannon, D2000-0071). Such U.S. common law trademark rights accrue automatically, that is regardless of any registration, to the first business using a mark to identify its goods or services. Marks that are primarily merely a surname cannot be enforced at common law unless secondary meaning is shown. Secondary meaning is attained when, due to exposure to the mark, the relevant public has come to view the mark not in its primary surname sense but as an indication of the source of the product or service. Evidence of long use of the mark on products or services and/or extensive advertising through use of the mark can establish secondary meaning.

The certificates attesting membership in the American Chamber of Commerce for Italy since at least 1939 show that the Savino Del Bene group has been doing business in the United States for decades. Moreover, the web site

www.sdb.it

indicates that Complainant has offices in at least 13 cities throughout the territory of the United States which are doing business under the "Savino Del Bene" name (and not just "SDB"). Therefore, this Panel finds that Complainant has shown that it owns common law rights in the trademark SAVINO DEL BENE in the United States and that this trademark is virtually identical to the Domain Name at issue.

Legitimate Rights or Interests

As of the date of this decision, Respondent has not made any use of, or demonstrable preparation to use the Domain Name. Respondent contends that he intends to form a web site where former employees of Complainant could keep in touch or shareholders could exchange their views and that such use would constitute non-commercial or fair use. However, what the Respondent claims he intends to do is irrelevant, since he has taken no demonstrable steps towards his goal. There is no evidence that Respondent is making or preparing a legitimate noncommercial or fair use of the Domain Name as defined by paragraph 4. (c) (iii) of the Policy. Moreover, this Panel finds that, as a rule, former employees do not have a legitimate right or interest in registering in their own name their former employer's trademark as a domain name. Therefore, this Panel finds that Respondent has not demonstrated his rights or legitimate interest in the disputed Domain Name.

Registration and Use in Bad Faith

It is established that Respondent had actual knowledge of Complainant's name "Savino Del Bene" since he has shown that he worked for Complainant in the past. Complainant's contention that "Respondent was not formerly employed by Complainant" is clearly contradicted by the documents submitted by Respondent (Exhibits 8-10 to the Response). Nevertheless, this Panel finds that Respondent's registration of the company name of his former employer as a domain name is an act of bad faith. If Respondent genuinely intended to create a forum for former employees of Complainant, he could have chosen a domain name indicating this fact (e.g. in e prefix or suffix). However, by registering exactly the name of his former employer as a domain name, Respondent deliberately prevents Complainant from reflecting its company name and common law trade mark SAVINO DEL BENE in a corresponding ".com" domain name, even if no pattern of preclusive registrations by Respondent had been shown (Mrs. America Productions, Inc. v E.T. Corp., NAF 0003000094377). Any Internet user (and not just former employees) going to

www.savinodelbene.com

expecting to find Complainant would be immediately linked to whatever content is posted by Respondent.

Panels have repeatedly held that the mere holding of a domain name may constitute a "use" in the sense of paragraph 4 (a) (iii) of the Policy. The concept of a domain name "being used in bad faith" is not limited to positive action; rather, inaction is within the concept (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO 2000-0003). Respondent has registered the Domain Name more than one year ago without providing any evidence whatsoever of an actual or contemplated good faith use of the Domain Name. Accordingly, this Panel finds that Respondent has registered and used the Domain Name in bad faith.

 

7. Decision

For all of the foregoing reasons, this Panel decides that the Domain Name registered by Respondent is identical or confusingly similar to the common law trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. Accordingly, pursuant to paragraph 4 (i) of the Policy, the Panel requires that the registration of the Domain Name "savinodelbene.com" be transferred to the Complainant.

 

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Andrea Mondini
Sole Panelist

Dated: December 12, 2000